The Wrestling Zone, Inc.Download PDFTrademark Trial and Appeal BoardNov 2, 2009No. 77561949 (T.T.A.B. Nov. 2, 2009) Copy Citation Oral Hearing: September 8, 2009 Mailed: November 2, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re The Wrestling Zone, Inc. ________ Serial No. 77561949 _______ Donald L. Dennison of Dennison, Schultz & MacDonald for The Wrestling Zone, Inc. Judy Helfman, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney). _______ Before Bucher, Holtzman and Cataldo, Administrative Trademark Judges. Opinion by Holtzman, Administrative Trademark Judge: Applicant, The Wrestling Zone, Inc., seeks to register the mark WEW in standard characters for "pay-per-view and on-demand television transmissions of live wrestling exhibitions" in Class 38.1 1 Application Serial No. 77561949 filed September 4, 2008, asserting a date of first use and first use in commerce on February 17, 2001. The application also includes goods in Class 9 ("pre-recorded DVDs featuring wrestling exhibitions"). However, the refusal to register pertains solely to Class 38. The application includes a claim of ownership of Registration Nos. 2753991 and 3477169. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 77561949 2 The examining attorney refused registration under Sections 1, 3 and 45 of the Trademark Act on the ground that the specimen does not show use of the mark for the identified services as required by Trademark Rule 2.56. When the refusal was made final, applicant appealed. Briefs have been filed. An oral hearing was held. Section 1(a) of the Trademark Act provides that an application must be accompanied by a specimen of the mark as used in commerce. Section 45 provides that a service mark is used in commerce "when it is used or displayed in the sale or advertising of services," and Trademark Rule 2.56(b)(2) in turn requires a specimen showing the mark as actually used in the sale or advertising of the identified services. In order to show service mark use, the specimen must show use of the mark in a manner that would be perceived by the relevant public as identifying the specified services and indicating their source. See Section 45 of the Act; and In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (CCPA 1973). At a minimum, the specimen must show a direct association between the services and the mark sought to be registered. See In re Advertising & Marketing Development, 821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987). The specimen submitted with the application is described by applicant as a promotional poster. The mark "WEW" is centered at Ser No. 77561949 3 the top of the poster followed by the wording "WOMENS EROTIC WRESTLING" directly below. The middle of the poster depicts two partially clad women with "CENSORED" displayed across their chests and the wording "NUDE STREET FIGHT" superimposed over their images. The following information appears at the bottom of the poster: AVAILABLE ON DVD & DOWNLOAD AND VIDEO-ON-DEMAND Applicant argues that the poster is an appropriate specimen for services; and that the poster clearly shows use of the mark WEW and clearly refers to video-on-demand services. Applicant points out that "video-on-demand" is an actual transmission by a television or cable network, and to support this point, has submitted an entry for "video on demand" from wikipedia.org which states in part: Video on demand (VOD)...systems allow users to select and watch/listen to video...content on demand. VOD systems either stream content through a set-top box, allowing viewing in real time, or download it to a device...for viewing at any time. The majority of cable- and telco-based television providers offer both VOD streaming, such as pay-per-view, whereby a user buys or selects a movie or television program and it begins to play on the television set almost instantaneously, or downloading to a DVR rented from the provider, for viewing in the future. ... Download and streaming video on demand systems provide the user with a large subset of VCR functionality including pause, fast forward, fast rewind, slow forward, slow rewind, jump to previous/future frame etc. ... Ser No. 77561949 4 Applicant also notes that the ID Manual lists "broadcast services and provision of telecommunication access to films and television programmes provided via a video-on-demand service" as a proper and recognized service in Class 38. It is applicant's apparent position that the reference to both the mark and the video-on- demand service in the specimen is sufficient to demonstrate a direct association between the mark and the services. There is no question that "video-on-demand" states a service and that the specimen "refers" to the service. However, it is not enough that the mark and the services both appear in the same specimen. In order to create the required "direct association" the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source. That is not the case here. The poster is an advertisement for services, but not for a video-on-demand service. It is an advertisement for an entertainment event, and the mark WEW as used in the advertisement identifies the nature of the entertainment, i.e., WOMENS EROTIC WRESTLING and a NUDE STREET FIGHT. The reference to video-on-demand on the specimen is used only in an informational sense to notify the public of the options available for viewing the wrestling event.2 As noted 2 We note that there is no explanation in the record as to how a "live" event can be broadcast by means of "video-on-demand" when, based on the Wikipedia information, this type of service appears to refer to the broadcast of stored content and pre-recorded programs rather than live events. Ser No. 77561949 5 by the Court in In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973): The requirement that a mark must be "used in the sale or advertising of services" to be registered as a service mark is clear and specific. We think it is not met by evidence which only shows use of the mark as the name of a process and that the company is in the business of rendering services generally, even though the advertising of the services appears in the same brochure in which the name of the process is used. The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor. (Emphasis in original.) Although the WEW mark and the video-on-demand service both appear in the advertisement, the mark would be perceived by the public only as identifying applicant's entertainment services, and not as identifying the form in which the entertainment is transmitted to the public, that is by means of video-on-demand. Thus, the required direct association between the mark WEW and the video-on-demand service cannot be made.3 We also point out that although the WEW event is clearly "transmitted" via video-on-demand, this activity in itself is not the equivalent of a "transmission" service, at least for purposes of proper classification. The U.S. Patent and Trademark Office recognizes the distinction between the two types of services by classifying them in two separate classes. See Acceptable 3 We are not saying that the mark could not be used on the same specimen to identify both services, but only that in this case it is not used in such manner. Ser No. 77561949 6 Identification of Goods and Services Manual which lists, for example, "provision of non-downloadable(4) films and television programmes via a video-on-demand service" in Class 41; and "video-on-demand transmission services" in Class 38. As stated in the "explanatory notes" of the Nice Classification, Class 38 "includes mainly services allowing at least one person to communicate with another by a sensory means"; and this class includes, in relevant part, "services which consist essentially of the diffusion of radio or television programmes." This is distinguished from Class 41 which, based on the Nice Classification, "covers mainly... services intended to entertain or to engage the attention"; and "includes, in particular: ...services having the basic aim of the entertainment, amusement or recreation of people." With the above guidelines in mind, it seems clear that for purposes of proper classification, Class 38 services involve the means or medium of transmission, not the subject matter of the transmission. In this case, the mark WEW is used on the specimen to identify the subject matter of the transmission. Based on the specimen, the mark is used in a manner that would be perceived by the public as identifying a program that is transmitted via video-on-demand, which as discussed above is a Class 41 4 We note that "downloadable" films and television programs provided via a video-on-demand service, in contrast, are classified in Class 9. Ser No. 77561949 7 "entertainment" service, not a Class 38 "transmission" service.5 In view of the foregoing, we find that the specimen does not show use of WEW in commerce as a mark for the Class 38 services. Decision: The refusal to register as to Class 38 is affirmed. The application will proceed to publication in Class 9. 5 There is nothing in the record to indicate that applicant actually renders a video-on-demand service, although based on the explanation given by applicant's counsel during the oral hearing, and contrary to the examining attorney's contention, applicant may well be providing some form of transmission service. As we understand it, applicant transmits the signals for its live wrestling events to a third-party service which in turn disseminates the signals to the public. This does not appear to constitute a "video-on-demand" transmission by applicant. Nevertheless, the only issue before us is whether the specimens show use for the services as identified, and not whether applicant is actually providing the named services. Copy with citationCopy as parenthetical citation